AFD China's Case Study on Business Method-Related Patent Application

2015-01-31

Prosecution of a business method patent application is still a hard work in China. AFD assisted a client on a business method-related application. In the First Office Action, the Examiner pointed out that a group of claims are not in conformity with the provisions of Article 2 of the Chinese Patent Law and the other group of claims is unpatentable subject matters under Article 25. And the Examiner also remarked that this application, claims and description, did not possess any substantial patentable contents.

When prosecuting a business method-related patent application, it is a tough issue to determine whether or not a scheme of a claim meets the definition of a technical scheme under Article 2. The factors for such determination are that a technical scheme should include technical means to solve technical problems and achieve technical effects.

In practice, examiners usually think that a business method-related scheme is not a technical scheme under Article 2 if they could not see technical means but only the business method in a claim.

The Examiner believes in the First Office Action that the schemes are to solve business problems but not technical problems under the Patent Law, and thus not technical schemes under Article 2.

After reviewing and studying on the application documents and discussing with the client, we dug out the technical problems, effects, and means. When responding to this action, we adjusted the recitation of the claims which might mislead the Examiner to believe that the scheme is to solve business problem. Furthermore, in the observation AFD team addresses each of the factors of the technical scheme in each of the amended claims in a complete logic for reasoning - technical problems, technical means and technical effects.

The problem to be solved by the technical scheme substantially is how to technically realize a content sharing system, where the content thereof belongs to various groups and could be expanded following the free will of the user. That is, the technical scheme actually seeks to solve a technical problem in the telecommunication field. Moreover, the technical scheme improves the structure and function of the content sharing system, and thus provides a new content sharing system in the technical level, which brings improvement to the structure and function of the content sharing system and content sharing method, i.e. technical effects.

Additionally the other group of claims was amended to patentable subject matters.

However, in the Second Office Action, the Examiner insisted that all claims are not in conformity with the provisions of Article 2 since the means are known means in the art but not the technical means and the effects are not the technical effects under the Patent Law. The Examiner also insisted that all claims as well as description did not have any substantial patentable contents.

We adopted similar approach and make little strategic adjustment. Other than arguments on three factors, technical means, technical problems and technical effects, arguments also focused on that technical means in the technical schemes are not known means in the art. We also requested the Examiner to provide evidence for proving known means in the art.

Later, we successfully overcome inventiveness issue raised by the Examiner in the Third Office Action. Finally the present case is granted.